24 November 2010

On February 4, 2010, the Federal Court of Justice (Bundesgerichtshof, BGH) ruled in a second-instance nullity action that it is sufficient for "technicality" (or a technical character) of a claim if the respective teaching is "embedded in a technical apparatus" (cf. Xa ZR 4/07, Glasflaschenanalysesystem ("glass bottle analysis system"), automatic translation see here).

This decision has been issued by the Xa. (10th auxiliary) Civil Panel under Chief Judge Peter Maier-Beck which has also issued the much discussed decision Xa ZB 20/08 ("Dynamische Dokumentengenerierung") in favour of patentability of a software-related invention, namely a client-server system for dynamically generating structured documents such as XML or HTML documents (see earlier post).

The patent in suit, European patent EP 643 297, relates to a system for analysing, monitoring, diagnosing and/or controlling a process for manufacturing packaging glass products.

Independent claim 1 reads:

1. An analytical system (1) for analyzing, monitoring, diagnosing and/or controlling a process for manufacturing packaging glass products (4) said analytical system (1) being provided with an infrared-sensitive sensor system (24) and a digital processor (30) connected therewith, said infrared-sensitive sensor system (24) detecting infrared radiation emitted by warm products in the section directly after the glass-shaping process, and said digital processor (30) determining the energy distribution in the material of the shaped product and energy differences between different parts of the shaped product by means of information from the products obtained with said infrared-sensitive sensor system wherein said energy distribution and/ or energy differences are compared with criteria, obtained by means of a mathematical reference model, for determining deviations in glass distributions and causes leading to thermal stresses in the product.

Independent claim 11 is directed to an "apparatus for producing packaging glass products [...] provided with an analytical system according to [claim 1]".

In the first-instance nullity action before the Federal Patent Court (Bundespatentgericht, BPatG), the plaintiff (and accused infringer in a parallel infringement suit) argued lack of inventiveness and insufficient disclosure, but the Patent Court dismissed the case (BPatG 4 Ni 10/05 (EU) of 08.11.2006). The plaintiff then appealed the decision but substantiated in his grounds of appeal only the alleged lack of inventiveness - but not insufficient disclosure. In that situation, the Court of Justice ruled that the appeal was inadmissible to the extent of the unsubstantiated ground for invalidity, i.e. the alleged insufficient disclosure.

With respect to the remaining lack of inventiveness attack, the Court of Justice took the same position as the Patent Court, namely that the claimed subject-matter is inventive over the cited prior art. Within the assessment of inventiveness, the Court of Justice also had to address the question, whether or not independent claim 1 involves "technicality" (i.e. a technical character) and found that the claimed "analytical system" exhibits the required technicality just offhand, since it is sufficient for the requirement of technicality that the teaching in question is embedded in a technical apparatus.

This ruling is perfectly in line with the Court of Justice's decision X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“) of January 20, 2009, according to which a software that is embedded in a larger technical system may represent statutory subject-matter (see earlier post). That decision was assumed to represent a turnaround of the Court of Justice's approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office, which has been generally confirmed by the EPO's Enlarged Board of Appeal on May 12, 2010 in the opinion on referral G 3/08 (see earlier post).

(The above-depicted "Codd Bottle" was invented in 1872 and patented by Hiram Codd and enclosed a marble and a rubber washer/gasket in the neck. Such bottles were filled upside down, and pressure of the gas in the bottle forced the marble against the washer, sealing in the carbonation. The bottle was pinched into a special shape to provide a chamber into which the marble was pushed to open the bottle.)

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